Triumph over excessive fees – How we helped change a Rule in India

05.01.2016

Dr. Efrat Lev Lehman, Patent Attorney
Adv. Yissachar Bertisch

On 26 October 2015 the Indian Ministry of Commerce and industry issued a notification proposing amendments to the existing India Patent Rules. These proposed Rules are currently under public inspection and the final version of the amended Rules is expected to come into force during 2016. The aim of the revision is to bring the current regulations into alignment with recent judicial pronouncements and to speed up the patent process by simplifying procedures and costs.

Among the rules intended for amendment: Reduction in the time for placing the application in condition of Acceptance; Provisions for Accelerated examination (upon fulfillment of certain conditions, such as, manufacturing of invention already commenced in India); Changes in Opposition Proceedings; and Foreign Filing License requirements. Other changes target promotion of E-communication, such as phasing out of the older modes of communication and conducting Hearings via video conferencing.

A small, perhaps even unnoticeable change, pertains to a proposal to cap the fee due for payment for each page of sequence listing of nucleic acids and amino acids.

We are proud to say that our firm played a significant role in this suggested change, as illustrated below.

A sequence listing is a list of biological sequences, commonly found in applications filed within the fields of Biology and Bioinformatics. If nucleic/amino acid sequences are disclosed in a patent application, the Patent Offices require applicants to file sequence listings in standard symbols and format. When the application discloses hundreds or thousands of nucleic/amino acid sequences, this may add several hundreds of sequence listing pages to the application, and in some cases, even thousands.

The Indian Patent Office currently enforces a page fee per page of application over 30, including pages of sequence listings. This fee is imposed even in cases which consist of hundreds to thousands of Sequence Listing pages, and despite the fact that the listings were electronically submitted. This has deterred Applicants from filing Biological Applications in India as these fees, which sometimes exceed several thousands of dollars, were not feasible to many Applicants who saw this additional financial burden as unjust.

On behalf of our client, a world leading company in plant genomics, a Civil Writ Petition was submitted at the High Court of New Delhi against the Union of India, Ministry of Commerce & Industry, and the Indian Controller of Patents and Design. The Petition, submitted during March 2012, requested to revoke the excessive page fees applied on Sequence Listings, claiming that the Controller has acted beyond his authority when imposing additional page fee on Sequence Listing submitted in electronic format. After several years of proceedings, we were informed during August 2015 that the respondent’s position was to consider capping the fee for sequence listing.

Indeed, the proposed amendments of 26 October 2015 included a change to Fees Payable, a maximum cap of 160,000 Indian Rupees (~ USD 2,400) for Sequence Listing pages. According to Associate sources, there is a high likelihood of the sequence listing fee as provided in the draft rules being accepted.

We are pleased to have been able to contribute to this welcome change, which we believe will benefit both Applicants, as well as the economy of India, encouraging further commerce in the field of Biology and Bioinformatics.

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